DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-3, 8, 13, 15, 17-18, 20-23, 27, and 74-75 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "the at least one region of the brain" in line 1. There is insufficient antecedent basis for this limitation in the claim. Additionally, the concept of either one or two brain regions no longer makes sense given the fact that parent claim 1 has been amended to require a plurality of at least three specific regions calling into question whether or not claim 8 intends to broaden the scope of claim 1 which renders the claimed scope indefinite for a second reason. For compact prosecution purposes the examiner recommends either a) cancelling the claim, or b) iterating that the “the plurality of brain regions” is such that it “further comprises [additional regions that are not the frontal lobe, auditory cortex, or caudate nucleus]” if the applicant intended this claim to add additional regions.
Claim 13 recites the limitation “the brain” in line 2. There is insufficient antecedent basis for these limitations in the claim. For compact prosecution the examiner recommends replacing this with “the frontal lobe”.
Claim 15 recites the limitations "the one or more pathological profiles of tinnitus" in line 3. There is insufficient antecedent basis for these limitations in the claim.
Claim 20 recites the limitation “the one or more brain regions” in line 1 and "the at least one pathological profiles of tinnitus” in line 3. There is insufficient antecedent basis for these limitation in the claim. For compact prosecution purposes the examiner notes that the claim amendment to claim 1 now utilizes “[the] plurality of brain regions” and “[the] at least one pathology profile of tinnitus. Furthermore, the claim also addresses three “modulated functional connectivity” items a)-c) wherein it is unclear and prima facie indefinite how these are modulated. For compact prosecution it is presumed that these are modulated “as compared to a reference level derived from subjects without tinnitus”. Claims 21-23 are each similarly affected, at least by virtue of dependency.
Regarding claim 27, the claim recites “a resting-state MEGI imaging device (MEGI)”, wherein the acronym MEGI is already defined in parent claim 1 at line 2, and defining two different terms using the same acronym is prima facie confusing and calls into question how the MEGI of claim 27 relates to the MEGI of parent claim 1.
Claim 74 recites the limitations "the at least one pathology profile of tinnitus” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For compact prosecution purposes the examiner notes that the claim amendment to claim 1 now utilizes “[the] at least one pathology profile of tinnitus.
Claim 75 recites the limitation "the at least one pathology profile" in line 5. There is insufficient antecedent basis for this limitation in the claim. Claims 2-3 and 17-18 are affected by virtue of dependency.
Claim 75 recites “acquiring functional magnetic resonance imaging (fMRI) functional connectivity data of at least the caudate nucleus” in lines 2-3; however, the claim requires assessing fMRI “connectivity between the caudate nucleus and one or more other brain regions” in lines 6. As such it is unclear how this data is obtained and/or whether or not there is a missing data gathering step or data gathering limitation relating to the “at least” in line 2 of the sort addressed in MPEP § 2172.01 which renders the claim indefinite. Claims 2-3 and 17-18 are affected by virtue of dependency.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In this instance claim 8 appears to require that the plurality of at least the brain regions established in parent claim 1 at lines 3-4 which already included at least three specific regions is now “at least two brain regions” as iterated in claim 8 at line 2 which is at the very least not limiting to the parent and appears to be expressly a broadening amendment and therefore not a proper dependent claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 4-7, 9-12, 14, 16, 24-26, 28-29, and 76 are allowed.
Claim 2-3, 8, 13, 15, 17-18, 20-23, 27, and 74-75 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
In this instance the examiner notes that the claims are prima facie novel, but that related work has been done in the field of fMRI that bears mention, e.g. by Leaver (of record), however given the current claim amendment the examiner is forced to admit that the specific determination step c) of the claims renders the claims unobvious over the prior art. In particular for an application gathering MEGI functional connectivity of at least the frontal lobe, auditory context, and caudate nucleus then comparing the modulated MEGI functional connectivity between at least the caudate nucleus and other areas of the brain when compared to a reference level is a different measure than the examiner could find in the prior art or reasonably hold obvious over teachings of the prior art. Furthermore, the inclusion of step d) also clarifies that the claims are unambiguously patent eligible as it requires a particular treatment of the sort addressed in MPEP 2106.04(d)(2)(a). These two factors combined cause the examiner to hold claim 1 and its dependents to be patentable over the prior art.
Response to Arguments
Applicant's arguments filed 03/26/2026 with respect to the 112(b) rejections have been fully considered but they are not fully persuasive. In more detail, the applicant has addressed the majority of issues identified by the examiner but in multiple instances when a single line item addressed multiple issues with a claim the applicant only addressed the first listed issue which have caused the examiner to amend but not fully remove certain rejections, likewise the applicant’s amendment has raised new issues that cause the examiner be fully persuaded by the argument for the reasons best addressed by viewing the new and/or amended 112(b) rejections issued above.
Applicant’s arguments, see page 10, filed 03/26/2026, with respect to the 101 rejection has been fully considered and are persuasive. The associated rejection of the previous office action has been withdrawn.
Applicant’s arguments, see pages 10-15, filed 03/26/2026, with respect to the 103(a) rejections have been fully considered and are not persuasive. As such the examiner will respond to the arguments, though given the indication of allowability of the claims over the prior art these can additionally be considered moot. Responding to the arguments in the order presented the examiner notes:
First, the applicant’s arguments on pages 10-12 about Leaver’s teachings are overly simplistic and have two significant flaws. Primarily the applicant asserts that because portions of Leaver “find no significant correlation” they can ignore the other sections and teachings of Leaver, cited expressly, that do show a significant modulation between the ROIs. That is the argument is spurious because the applicant does not respond in full to the specific citations in the rejection but instead pulls other teachings of Leaver that would, if serving as the sole basis for the examiner’s rejection, have issues. This does not fully address the actual rejection and therefore cannot be convincing. Additionally, the applicant also appears to ignore both the discussed terminology and physiological overlap between the cited features of Leaver. E.g. the Heschel’s gyrus is for examination purposes the same as the auditory cortex. As such the applicant’s analysis on pages 10-12 could never be convincing for a second reason as the applicant appears to only regard to the wording and not the scope/physiology in question. As such the examiner was not convinced by the applicant’s arguments regarding the features of Leaver.
Second, the applicant argues on pages 12-14 against Adjamian but the argument is neither legally nor logically sound. As an example, the applicant opines (paraphrasing) that MEGI has serious flaws and should not be combined with or considered when one could instead use fMRI. Legally speaking this is utterly irrelevant and spurious as Adjamian also sings the praises of MEGI (e.g. it has enormously improved temporal resolution versus MRI which allows real time/oscillatory signal processing, and additionally it is silent and therefore can be paired with auditory deprivation or auditory stimulation to obtain differential measurements). The fact that the applicant has latched onto something not relevant to the rejection and opined that it would cause the reader to not consider using MEGI when the reasons one would consider using MEGI are also laid out in Adjamian and further discussed in Mathur is again picking and choosing non-cited sections of the prior art that do not relate to the rejection and could not serve as the basis for a legally valid argument until and unless they were weighed in context to the advantages as all combinations have both benefits and detriments and merely opining that there are known detriments to a technology could never serve as a solid or proper legal basis to overcoming a rejection when one does not address the benefits. Approaching this same issue logically, the examiner notes that if they were for some reason convinced by the applicant’s argument; then they would necessarily not go forward with a notice of allowable subject matter as it would be abundantly clear that one or both of an enablement rejection or a best mode rejection should be made. In other words, the applicant does not claim, or even have in their specification, a new and structurally different MEGI apparatus that operates on new and different principles. Rather the applicant’s claimed and specified invention necessarily has these same flaws which the applicant highlights on page 13 of their remarks. The examiner does not buy this argument, but the examiner urges the applicant to consider how their invention differs from the art when crafting their arguments as this one could never lead to patentability even if the examiner whole heartedly agreed with it and would instead have delayed patentability while additional rejections relating to the operability or best mode of the invention were addressed.
On pages 14-15 the applicant addresses DeRidder, Eggermont, Boyen, and the remaining dependent claims and opines that these arts do not remedy the deficiencies argued above and/or are patentable by virtue of dependency. The examiner is not convinced by these arguments for the same reasons set forth above and therefore does not agree that the claims are currently ready for patentability by virtue of dependency on the basis of these arguments.
In summary, the examiner has withdrawn the claim rejections under 103(a) due to the wording of the new claim drafting and while the claims are not in condition for allowance at this juncture due to non-art issues, the arguments provided by the applicant do not feature in the examiner’s rational for indicating that the claims are allowable over the prior art as they are not convincing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is as follows:Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael S Kellogg whose telephone number is (571)270-7278. The examiner can normally be reached M-F 9am-1pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached at (571)270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL S KELLOGG/Examiner, Art Unit 3798
/KEITH M RAYMOND/Supervisory Patent Examiner, Art Unit 3798
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